On July 8, 2015, the Eastern District of Virginia upheld a decision by the TTAB cancelling the registration of six “Redskins” marks on the grounds that they consisted of matter that “may disparage” Native Americans in violation of Section 2(a) of the Lanham Act.
The Washington Redskins (Pro-Football, Inc. or “PFI”) argued that the record did not establish that a substantial composite of Native Americans believe that the Redskins marks consist of matter that “may disparage” them. In addition, PFI raised First and Fifth Amendment challenges to the constitutionality of Section 2(a), and argued that the disparagement claim was barred by laches. The court rejected all of PFI’s arguments.
Lanham Act Challenges
A mark may be denied federal trademark registration under Section 2(a) of the Lanham Act if it “[c]onsists of or comprises . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute . . . .” To show a violation of Section 2(a) the defendants were not required to show that PFI intended to disparage Native Americans but only that the marks “may disparage” a “substantial composite” (but not necessarily a majority) of Native Americans.
The court reviewed de novo three categories of evidence reviewed by the PTOin evaluating disparagement claims: (1) dictionary definitions; (2) scholarly, literary, and media references; and (3) statements of individuals and group leaders of the referenced group regarding the term. Here, the record contained ample evidence in all three categories, including: (i) ten contemporary dictionaries (and one dating as early as 1898) characterizing “redskins” as offensive or contemptuous; (ii) twenty-seven contemporary scholarly, literary, and media references illustrating the term’s disfavor among Native Americans; and (iii) declarations from prominent Native American individuals showing how the term “redskin” has been used as a racial slur for decades, as well as evidence of Native American groups protesting the team’s name as early as 1972. The court observed the TTAB and the Federal Circuit have consistently denied or cancelled a mark’s registration in the face of such evidence.
First Amendment Challenges
The court rejected PFI’s First Amendment challenges to Section 2(a) emphasizing that use of the marks was not at issue, merely their registration. Because cancelling the federal registration would prohibit neither the team from using the marks, nor fans from collecting, wearing, or displaying the marks, and thus no conduct is proscribed or form of expression suppressed, Section 2(a) does not implicate the First Amendment. PFI’s arguments that Section 2(a) prohibits or penalizes speech were therefore rejected.
Further, the court held that federal trademark registration relates to government, rather than commercial, speech. The court cited three factors supporting this conclusion, namely: (1) the federal trademark registration program communicates the message that the federal government has approved the trademark; (2) the public closely associates registration with the federal government; and (3) the federal government exercises editorial control over the program. As government speech, the program is exempt from First Amendment scrutiny. The court also held that the government may determine the contents and limits of its programs, without violating the First Amendment. The “legislature’s decision not to subsidize the exercise of a fundamental right does not infringe the right” because the team is free to use its mark outside of the program.
Fifth Amendment Challenges
PFI also argued that Section 2(a) is void for vagueness under the Fifth Amendment. The court disagreed for four reasons. First, PFI could not show that Section 2(a) is unconstitutional in all of its applications. Second, Section 2(a) gives fair warning of what conduct is prohibited because at the time the Lanham Act was enacted, multiple dictionaries contained materially identical definitions of the word “disparage.” Third, Section 2(a) does not authorize or encourage “arbitrary and discriminatory enforcement” because the PTO sets forth sufficient guidelines that identify which matters “may disparage” under Section 2(a)—for example in the Trademark Manual of Examining Procedure. Finally, Section 2(a) is not impermissibly vague as applied to PFI because PFI had reason to know that the Redskins marks “may disparage” when PFI initially registered them. The PTO has consistently treated “redskins” as a term that “may disparage,” refusing at least twelve applications since 1992, seven of which involved PFI’s applications.
The court further rejected PFI’s Takings and Due Process Clause claims because a federal trademark registration does not constitute a property interest under the Fifth Amendment.
Finally, the court found that the defendants did not unreasonably delay in petitioning the TTAB to cancel the Redskins marks. Moreover, according to the court, laches did not apply here because of the public interest in removing from the register disparaging marks.
The Washington Redskins have stated they will appeal the court’s decision.
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